WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sprint Communication & Management v. Morris Communications
Case No. DBIZ2002-00112
1. The Parties
The Complainant in this proceeding is Sprint Communication & Management, located at 27, Bd. Albert 1er, MC 98000 Monaco, Monte Carlo, Monaco. The Complainants authorized representative is H. Postel, located at Dillenburglaan 9a, 2281 CZ Rijswijk, The Netherlands.
The Respondent is Morris Communications, located at 725 Broad Street, Augusta, Georgia, United States of America.
2. The Domain Name and Registrar
The domain name upon which the Complaint is based is <monaco.biz>.
The Registrar with which the domain name is registered is Emark Monitor Inc., located at 12438 West Bridger St., Suite 100, Boise, ID 83713, United States of America.
3. Procedural History
The Complaint was made in accordance with the Start-up Trademark Opposition STOP for .BIZ, adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001 (the "STOP"), the Rules for Start-up Trademark Opposition STOP for .BIZ, adopted by NeuLevel, Inc. and approved by the ICANN on May 11, 2001 (the "STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition STOP for .BIZ (the "Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2002, by e-mail and the hardcopy was received on April 29, 2002. The request for registrar verification was made and answered on June 6, 2002. The Center sought a clarification by Complainant on June 12, 2002, and received his reply on the same day. The response was received on July 1, 2002 (e-mail), and July 4, 2002 (hardcopy). On July 26, 2002, the Panel was appointed and the file transmitted to the Panelist. Supplemental filings were received from both parties but the Panel decided not to allow them.
4. Partiesí Contentions
The Complainant asserts that the substantive portion of the Disputed Domain is identical to the Complainantsí trademarks.
Forumla VIP Monaco is used by the Complainant in conjunction with the Monaco Grand Prix of formula 1 and Formula VIC Monaco is used for "les enfants de Franckie" (helping ill and children in need on the French Riviera).
"Formula VIP Monaco" and "Sprint Communication & Management Monaco" are the Complainantís registered Trade Marks and 99 % of the Complainantís turnover is in Monaco.
The Complainantís company is based in Monaco and operated from Monaco. The Complainantís company logoís, stationary and buildings use the term Monaco.
In reference to the element in Paragraph 4(a)(ii) of STOP, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain.
The Respondent is a Media company not based and not operating out of Monaco (since it is operating in the USA for the USA market, which has no direct link to Monaco).
To the Complainantís knowledge the domain name registrant (Morris Communications) does not look to be the owner or beneficiary of a trade or service mark that is identical to the domain name.
The Complainant has carried out searches and surveys of trademarks and has never learnt of any MONACO-trademark filed by the Respondent.
In reference to the requirements of Paragraph 4(a)(iii) of STOP, the Complainant asserts that the Respondent has registered the Disputed Domain in bad faith and that it can only be assumed that the name <monaco.biz> will be used to sell or to transfer it to a competitor or other company operating in Monaco or Casino Sites.
As 99% of the Complainantís turnover is in Monaco, it may be an attempt by the Respondent to attract for commercial gain Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainantís Trade Mark of a service on our web site or location.
a. The Domain Name Is Not Identical
While Complainant Sprint claims to have one or more trademarks that incorporate the word "Monaco," its marks are not identical to the Domain Name <monaco.biz>. The trademarks offered by Complainant include: (1) "Formula VIP Monaco" and "Formula VIC Monaco" and "Sprint Communications & Management Monaco." These trademarks are not identical to "Monaco," and are insufficient bases upon which to assert a .BIZ STOP complaint because the contested domain name must be "identical to a trademark or service mark" in which the Complainant has rights."
b. Respondent Has Legitimate Plans to Use the Domain Name to Further an Existing Commercial Enterprise.
Respondent is a privately held media and advertising company whose business includes newspaper publishing, magazine publishing, brochure publishing, book publishing and distribution, radio broadcasting, television broadcasting, computer software development and licensing, Internet web site development and publishing, outdoor advertisement and special events, such as equestrian events. (For a list of all Respondent's properties, see "http://www.morris.com/standard/divisions/index_divisions.html)". As such, there is probably no way for Complainant Sprint to have learned of all of Respondent's business interests prior to filing the Complaint. Respondent owns and operates a radio broadcasting station in the Principality of Monaco. Respondent's office for this radio station are in Monaco.
Respondent has owned and operated this radio station since 1998, and services advertisers as part of its operations. Respondent intends to utilize the Domain Name to include advertising of its advertisers, as well as provide local information about Monaco. Of course, Respondent also intends to advertise its radio station on the Uniform Resource Locator ("URL") using the Domain Name. This intended use was planned well before receipt of the STOP Complaint and is business-related. Therefore, Respondent has legitimate plans to use the Domain Name to further one of its existing commercial enterprises. Accordingly, the Complaint should be dismissed.
Additionally, Respondent has developed, and continues to develop, travel and tourism media properties in Europe. For example, Respondent owns and publishes Londinium, which is a publication geared toward hotel guests. Londinium is published quarterly with listings of events and activities, and is distributed in hotel rooms. More recently, Respondent purchased the Nippon/Navigator Book Co., in London, England, which publishes a number of European fashion and travel magazines.
As a result, Respondent's business includes a significant focus on travel throughout Europe, including, in part, Monaco.
This emphasis on travel is the basis of another of Respondent's business endeavors: the publication and distribution of a printed 5.25 inch (13.5 cm) by 7.5 inch (19.2 cm) tourist publication by the name of Best Read Guide. Respondent (Best Read Guide Franchise Company, LLC) publishes these Best Read Guides in approximately forty cities in the United States, such as Orlando, Florida, Las Vegas, Nevada, Newport, Rhode Island, as well as in London, England. In these Best Read Guides, Respondent publishes information of attractions, entertainment, recreation, business, dining and shopping highlights, as well as advertisements sold to local businesses in those cities. Part of the Best Read Guide business consists of a corresponding Internet web site that utilizes the domain name <bestreadguide.com>, which is registered to Respondent's wholly-owned subsidiary, Best Read Guide Franchise Company, LLC.
Respondent has incorporated Monaco into its Best Read Guide business as a destination city. Respondent intends to link the Domain Name <monaco.biz> to the Best Read Guide network of websites, along with other city-named .biz domain names, in a co-branding effort promoting both the Domain Name <monaco.biz> and <BestReadGuide.com>. Prior to receiving the STOP Complaint, Respondent had conceived plans to sell advertising to business and tourist attractions, goods and services in Monaco and commenced work on developing a co-branded web site to be located at "www.monaco.biz". Therefore, Respondent has had legitimate plans to use the Domain Name in connection with a bona fide business of selling advertising. Accordingly, the Complaint initiating this action should be dismissed.
c. There is No Bad Faith.
Complainant Sprint has failed to prove the third and final required element: bad faith. The Domain Name should not be considered as having been registered or used in bad faith for the following reasons:
(1) Respondent has not registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant Sprint or to a competitor of Sprint. In fact, prior to receipt of the STOP Complaint, Respondent was unaware of the existence of Complainant Sprint, or its commercial endeavors. To be sure, Respondent has absolutely no intention of selling, leasing or transferring the Domain Name to Complainant Sprint or any one else.
(2) Respondent has not registered the Domain Name in order to prevent Complainant Sprint from reflecting any of its marks ("Formula VIP Monaco," "Formula VIC Monaco" or "Sprint Communication & Management Monaco") in a corresponding domain name, which presumably would be <formulavipmonaco.biz>, <formulavicmonaco.biz>or <sprintcommunicationandmanagementmonaco.biz>. In fact, none of these three domain names have been registered by anyone, including Complainant Sprint.
Additionally, it is worth noting that Complainant Sprint is not the registrant of any other group top-level domain consisting solely of the word "monaco" (e.g., <monaco.com>, <monaco.net> or <monaco.org>). Further, while Complainant Sprint did register the domain name <formulavipmonaco.com>," it did not register any of the following domain names, all of which were still available for registration as of June 26, 2002:
Accordingly, it appears that Complainant Sprint is attempting to reverse-hijack the Domain Name <monaco.biz> instead of registering legitimate domain names more closely resembling its service marks. As a result, the Complaint initiating this action should be dismissed.
(3) Respondent did conduct an online trademark search prior to registering the Domain Name, and failed to locate any pending or registered mark of Complainant Sprint identical to the Domain Name. Accordingly, there is no bad faith on behalf of Respondent.
(4) Respondent has not registered the Domain Name primarily for the purpose of disrupting the business of Complainant Sprint. In fact, prior to receipt of notice of the Complaint in this action, Respondent had no idea who Complainant Sprint was. Additionally, the Complaint indicates that Complainant Sprint's business is limited to (1) Formula I Grand Prix racing; (2) aiding ill children in need; and (3) its communication and management business. Respondent is not in any of these business areas, but instead, is an advertising and media company that primarily publishes newspapers, magazines, travel guides and books, as well as operates radio and television broadcasting stations. Since Respondent's business is so drastically different from that of Complainant Sprint, it should be readily apparent that Respondent has not registered the Domain Name with the intention of disrupting Complainant Sprint's business. Accordingly, there is no bad faith.
(5) Respondent has not yet actually been able to use the URL using the Domain Name "http://www.monaco.biz" because it appears that the registrar (NeuLevel, Inc.) has rendered the Domain Name inoperable. Therefore, since the web site "www.monaco.biz" has not been published on the Internet, it is impossible for Respondent to have attempted to attract, for commercial gain, Internet users to Respondentís web site or other on-line location, by creating a likelihood of confusion with Complainant Sprint or its service marks as to the source, sponsorship, affiliation, or endorsement of Respondentís web site or location or of a product or service on Respondentís web site or location. Additionally, Respondent's intended use of the Domain Name will be used to provide tourist information and business advertising related to Monaco, Monte Carlo. Since Respondent's intended use is so drastically different from the services provided by Complainant Sprint, it seems nearly impossible for Respondent to have created, or in the future to create, a likelihood of confusion of potential customers to the effect that there is some sort of sponsorship or affiliation between Respondent and Complainant Sprint. Thus, there is no bad faith.
(6) Finally, contrary to Complainant Sprint's baseless allegation, Respondent has no intention of operating a casino or gambling web site utilizing the Domain Name, and will certainly not sell or transfer the Domain Name to any one else intending to do so.
5. Discussion and Findings
A. Identity with the Complainantís Trademark
Under Paragraph 4 (a) (i) STOP, the Complainant has to assert that the Respondentís domain name is identical to a trademark or service mark in which the Complainant has rights.
In the present case, the Complainant asserts that the substantive portion of the disputed domain name <monaco.biz> is identical to its mark "Formula VIP Monaco" and "Formula VIC Monaco".
Obviously, Monaco is not the only distinctive feature of the Complainantís trademarks. Rather, the distinctiveness of those marks, if any, would be derived from the combination of "Formula VIP" with "Monaco".
The relatively obscure meaning of "Formula VIC" can help making it an unusual mark with some fantasy appeal, which therefore remains in the auditorís or viewerís memory as a distinctive trademark. The same cannot be said for "Formula VIP Monaco", which is a very weak mark to say the least.
However, this Panel is not to find on the validity of the registered trademark. As the element MONACO is not the unique or the main distinctive feature of the Complainantís trademarks, the Panel declines to find identity between the trademarks and the domain name at issue. On the other hand, the existence and use of those marks make it understandable that the Complainant wanted to claim back the domain name. Therefore, the plea by the Respondent for a finding of reverse hijacking will be dismissed.
Under the STOP, this finding precludes the Panel to order the transfer of the disputed domain name to the Complainant.
Thus, the two other grounds for complaint will be examined only summarily.
B. Right or Legitimate interests of the Respondent
The Respondent has made a detailed showing of some legitimate interest in the disputed domain name. Respondent allegedly owns and operates a radio broadcasting station in the Principality of Monaco, but this station is known by the name "Riviera Radio" and owns a corresponding domain, so that this interest would not be sufficient. However, the Respondent publishes the series of Best Read Guides and has incorporated Monaco into its Best Read Guide business as a destination city. The Respondent argues to have a legitimate plan to use the "www.monaco.biz" website within this framework. However, the Respondentís relatively weak connection with Monaco leads the Panel to decline to order that no further challenge shall be admitted for this domain name.
C. Bad Faith Registration
The Respondent has made a sufficient showing that it has earnest intentions to use the domain name at issue. It does not appear that the Respondent intends to sell, lease or transfer this domain name, nor disrupt Complainantís business. Finally, the Respondent certifies that is has no intention of operating a casino or gambling web site utilizing this domain name.
In the light of the foregoing, the Panel finds that there is no identity between the Complainantís trademark and the disputed domain name. Therefore the Panel declines to order the transfer of the domain name.
The Panel does not admit the plea for reverse hijacking.
Further, in accordance with Paragraphs 4a (1) (ii) (3) of the STOP and 15 (e) of the STOP Rules, the Panel decides that subsequent challenges under the STOP against the disputed domain name shall be permitted.
Dated: August 7, 2002